Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA671422 Filing date: 05/11/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Notice of Opposition Notice is hereby given that the following party opposes registration of the indicated application. Opposer Information Name DC COMICS Granted to Date 05/10/2015 of previous ex- tension Address 1700 Broadway New York, NY 10019 UNITED STATES Attorney informa- James D. Weinberger tion Fross Zelnick Lehrman & Zissu, P.C. 866 United Nations Plaza 6th Floor New York, NY 10017 UNITED STATES [email protected], [email protected] Phone:(212) 813-5900 Applicant Information Application No 86318018 Publication date 11/11/2014 Opposition Filing 05/11/2015 Opposition Peri- 05/10/2015 Date od Ends Applicant RORAJ TRADE LLC c/o HOLLAND & KNIGHT LLP Los Angeles, CA 900712801 UNITED STATES Goods/Services Affected by Opposition Class 041. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Providing on-line non-downloadable gener- al feature magazines Grounds for Opposition Priority and likelihood of confusion Trademark Act section 2(d) Dilution Trademark Act section 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 1930901 Application Date 05/04/1994 No. Registration Date 10/31/1995 Foreign Priority NONE Date Word Mark ROBIN Design Mark Description of NONE Mark Goods/Services Class 016. First use: First Use: 1990/11/13 First Use In Commerce: 1990/11/13 comic books U.S. Registration 1294617 Application Date 07/08/1975 No. Registration Date 09/11/1984 Foreign Priority NONE Date Word Mark ROBIN Design Mark Description of NONE Mark Goods/Services Class 028. First use: First Use: 1972/12/10 First Use In Commerce: 1972/12/10 a Toy Doll Figure Representation of a Cartoon Character U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark ROBIN Goods/Services Comic books, motion pictures, television shows, clothing, toys and video games. Attachments Notice of Opposition (ROBYN) (F1687635x96B9E).pdf(56668 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date. Signature /s/ James D. Weinberger Name James D. Weinberger Date 05/11/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD DC COMICS, Opposer, -against- RORAJ TRADE LLC, Applicant. NOTICE OF OPPOSITION DC Comics (“Opposer”), a New York partnership located at 1700 Broadway, New York, New York 10019, believes that it will be damaged by the issuance of a registration for the mark ROBYN to Roraj Trade LLC, c/o Holland & Knight LLP, 400 South Hope Street, 8th Floor, Los Angeles, California, 90071-2801 (“Applicant”) in International Class 41 as applied for in Application Serial No. 86/318,018, and therefore opposes the same pursuant to Section 13(a) of the Lanham Trademark Act of 1946, 15 U.S.C. § 1063(a). As grounds therefore, Opposer alleges as follows: 1. DC Comics and its predecessors-in-interest (collectively “DC Comics”) is the publisher of comic books and magazines featuring comic characters and stories, including the world-famous character Batman. DC Comics is among the most well known and successful publishers of comic magazines in the world. It has created and published highly successful and well-known characters, including Batman and Robin. 2. Over the many years since the Batman character was first introduced in 1939, DC Comics has focused an enormous amount of attention and effort to develop the Batman {F1687632.1 } character, including the character, his associates, his enemies, and other indicia associated with him. Throughout the period of Batman’s existence, DC Comics has invested a vast amount of creative energy and resources to continually update and improve the Batman property to keep the character and his adventures timely and fresh in the public’s mind. Opposer’s efforts in this regard have led to a vast array of literary works, television series, and feature films, which explore in great depth Batman himself and the fictional world inhabited by him. Due to Opposer’s extraordinary nurturing of the Batman character, the character has captured the popular imagination, and it is beyond dispute that today Batman is one of a rarified group of characters known and loved throughout the world. 3. Because of DC Comics’ shepherding and careful development of the Batman character and his universe and of the things and people that populate that universe, Batman has become associated with certain names, marks and indicia which, in the public mind, are inextricably linked with the Batman character and which function as trademarks, both for literary and entertainment works featuring Batman and related characters and for various goods and services, such as clothing, for which Opposer has licensed others to use these marks. 4. Among the names, marks and indicia inextricably linked in the public mind with the Batman character is the name and mark ROBIN (“Opposer’s Mark”). The ROBIN character, introduced in 1940, is one of the most prominent figures DC comic book universe. As the longstanding sidekick of Opposer’s world-famous BATMAN character, ROBIN has appeared alongside BATMAN for decades, together forming the “Dynamic Duo.” ROBIN has appeared along with BATMAN and such other well-known characters as BATGIRL, THE JOKER, CATWOMAN, THE PENGUIN, MR. FREEZE, and many others in numerous printed publications, digital publications, broadcast and cable television shows, home video releases, and {F1687632.1 } 2 video games, many of which are sold and distributed worldwide. 5. Opposer is the owner of all right, title, and interest in and to Opposer’s Mark in connection with a wide array of goods and services based on first use in commerce prior to any date upon which Applicant can rely, including but not limited to comic books, motion pictures, television shows, clothing, toys and video games. 6. As a result of Opposer’s reputation, use, enormous sales success and significant investment in advertising, Opposer’s Mark has developed secondary meaning and significance in the minds of the public and has become a strong trademark identifying Opposer’s goods and services exclusively. As such, Opposer’s Mark represents an enormous goodwill and is an extremely valuable asset to Opposer. 7. As a result of Opposer’s reputation, use, substantial sales success, popularity, and significant investment in advertising, Opposer’s Mark has become a famous trademark and became famous prior to any date upon which Applicant can rely. 8. Opposer also owns numerous U.S. trademark registrations for Opposer’s Mark, including, but not limited to, the following: ROBIN, U.S. Reg. No. 1,930,901, registered October 31, 1995 based on first use in November 1990, for “comic books” in International Class 16; ROBIN, U.S. Reg. No. 1,294,617, registered September 11, 1984 based on first use in December 1972, for “a Toy Doll Figure Representation of a Cartoon Character” in International Class 28; These registrations for Opposer’s Mark are valid, subsisting, and in full effect and serve as prima facie evidence of the validity of the mark and of Opposer’s exclusive right to use the mark in connection with the goods identified therein, pursuant to Section 33(b) of the Lanham Act, 15 {F1687632.1 } 3 U.S.C. § 1115(a). Additionally, these registrations have become incontestable under Section 15 of the Lanham Act, 15 U.S.C. § 1065, and therefore serve as conclusive proof of Opposer’s exclusive right to use the mark in connection with the goods identified therein, as provided by Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b). Attached hereto as Exhibit A are printouts from the TSDR electronic database records of the U.S. Patent and Trademark Office showing the current status and title of the registrations relied upon herein. 9. Upon information and belief, Applicant is a limited liability corporation existing under the laws of New York with a place of business c/o Holland & Knight LLP, 400 South Hope Street, 8th Floor, Los Angeles, California, 90071-2801. 10. On June 23, 2014, Applicant filed Application Serial No. 86/318,018 to register the mark ROBYN (“Applicant’s Mark”) for “Providing on-line non-downloadable general feature magazines” in International Class 41 based on a bona fide intent to use pursuant to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b). 11. Opposer’s Mark has been used continuously and/or registered by Opposer since a date prior to any date on which Applicant can rely. 12. Upon information and belief, prior to any date on which Applicant can rely, Applicant was on actual notice of Opposer’s prior rights in and to Opposer’s Mark. 13. The earliest date upon which Applicant can rely is long after the use, registration and acquisition of rights in Opposer’s Mark by Opposer or its predecessors-in-interest. As such, Opposer’s rights in Opposer’s Mark are prior and superior to any rights Applicant may claim in Applicant’s Mark. The registration of Applicant’s Mark is inconsistent with Opposer’s prior rights and statutory grant of exclusivity of use. {F1687632.1 } 4 14. Applicant’s Mark is virtually identical to Opposer’s Mark in sight, sound, and commercial impression. 15. Applicant’s goods to be offered under Applicant’s Mark are identical and/or highly related to goods sold under Opposer’s Mark and, upon information and belief, will be sold to the same customers or types of customers to whom goods and services bearing Opposer’s Mark are to be sold.